Opinion recap: The public domain shrinks

Posted Wed, January 18th, 2012 11:11 am by Lyle Denniston

Analysis

In a historic ruling on Congress’s power to give authors and composers monopoly power over their creations, the Supreme Court on Wednesday broadly upheld the national legislature’s authority to withdraw works from the public domain and put them back under a copyright shield. While the ruling at several points stressed that it was a narrow embrace of Congress’s authority simply to harmonize U.S. law with the practice of other nations, the decision’s treatment of works that had entered the public domain in the U.S. produced a far more sweeping outcome.

No one, the Court said flatly, obtains any personal right under the Constitution to copy or perform a work just because it has come out from under earlier copyright protection, so no one can object if copyright is later restored. Any legal rights that exist belong only to the author or composer, the ruling said. If anyone wants to resume the use or performance of a work after it regains copyright, they must pay for the privilege, the decision made clear.

The 6-2 decision (with Justice Elena Kagan not taking part) came in the case of Golan, et al., v. Holder (docket 10-545), involving a wide-ranging constitutional challenge to a federal law passed in 1994 to implement global agreements worked out in trade negotiations — the so-called Uruguay Round Agreement. The challenge, however, failed on all points: the law does not violate the Constitution’s Copyright Clause, it does not violate the First Amendment rights of anyone who previously had free access to creative works, and it does not deviate from any long-standing historical practice or perception, according to the decision.

Justice Ruth Bader Ginsburg wrote the majority opinion. Justice Stephen G. Breyer dissented, joined by Justice Samuel A. Alito, Jr. The main opinion relied very heavily upon a prior opinion written by Ginsburg — the Court’s 2003 decision in Eldred v. Ashcroft, upholding Congress’s power to lengthen the terms of copyrights while they were still in force. The new case was different, involving the grant of copyright to works never protected previously under U.S. law, and thus not previously restricted on use or performance in this country. The Court majority, however, insisted that the guiding constitutional principles were not different.

A group of orchestra conductors, educators, performers, film archivists and motion picture distributors had challenged the 1994 law, arguing that Congress does not have authority under the Copyright Clause to put back into effect, after the work has been in the public domain, the copyright on a creative work. If it does have that power, the challengers asserted, that violates the free-speech rights of those who have exploited the work while it was freely available to them.

Those were the arguments that drew no support from the Court majority. Noting that the challengers had argued that the Copyright Clause posed “an impenetrable barrier to the extension of copyright protection to authors whose writings, for whatever reason, are in the public domain,” the Court answered by saying: “We see no such barrier in the text of the Copyright Clause, historical practice, or our precedents.” Neither the words of that Clause, nor the way it has been understood since the first U.S. copyright law was passed by the First Congress in 1790, supports the claim that the public domain is “inviolate,” the opinion declared.

Much of the Ginsburg opinion focused upon the history of international practice on copyrights, a history that showed the U.S. for many decades going its own way in defiance of other countries’ demands for a common approach. But, after the Uruguay Round negotiations, the U.S. fell completely in line with other nations that had long been parties to the so-called Berne Convention, a treaty going back to 1886 on protection of copyrighted material. In an attempt to ensure that American authors and composers would get better treatment in other countries, Congress fully embraced the Berne Convention and made U.S. copyright law confirm to international understanding.

For works that had obtained copyrights in other countries, but never in the U.S., the 1994 law gave the overseas owners of their copyrights a new guarantee that — for the remainder of the term of their protection in their home country — they would have protection under U.S. copyright law. Because those works had never been protected in the U.S. previously, they could be copied or performed at will in the U.S., and many of them were. That free access had to stop with the 1994 law’s enactment, after a transition period to ease in the new system.

In challenging what was, in practice, a massive withdrawal of creative works from the public domain in the U.S., the orchestras, educators and archivists contended that many of them could no longer afford to pay the royalties that would then be required, and thus would simply have to stop using or performing the newly protected works. Moreover, they complained that smaller organizations, without big staffs and big budgets, would not have the resources to track down overseas the actual owners of a copyright that was put into effect for the first time in the U.S.

The Court’s main opinion conceded the economic change that the 1994 law brought about. Using an example of a work that gained new copyright protection in the U.S., Prokofiev’s “Peter and the Wolf,” Justice Ginsburg said that, while that once could be performed free of charge, the 1994 law required that “the right to perform it must be obtained in the marketplace.” But, the opinion went on, that is the same marketplace that exists for U.S. composers like Aaron Copland and Leonard Bernstein that have enjoyed copyright protection, and yet American performers have not been economically incapable of regularly performing the Americans’ works.

The Ginsburg opinion was an enthusiastic endorsement of Congress’s main goal in passing the 1994 law: to ensure that “most works, whether foreign or domestic, would be governed by the same legal regime.” The 1994 law, she added,”continued the trend toward a harmonized copyright regime by placing foreign works in the position they would have occupied if the current regime had been in effect when those works were created and first published.” The law, she went on, gives foreign authors and composers “nothing more than the benefit of their labors during whatever time remains before the normal copyright term expires.”

Justice Ginsburg rejected the strong complaints by the two dissenting Justices that the new regime puts on those who would use or perform an old work that has become an “orphan” — that is, its ownership is unknown or uncertain — the considerable task of trying to find the owner. The Court’s opinion responded by saying that dealing with “orphan works” is something that should be left to Congress, to take into account more influencing factors than a Court can consider in a lawsuit.

The Breyer dissent, joined by Justice Alito, dwelled mainly on what they argued was the highly unusual move by Congress to withdraw creative works from the public domain. While that was not unprecedented, the dissenters said it had been done rarely, and only in truly novel circumstances — such as during wartime. The dissenters also contended, as a constitutional principle, that the 1994 law does not satisfy the Copyright Clause because it did not encourage the creation of new works, but simply provided added compensation to works created decades before.

The Ginsburg opinion was supported in full by Chief Justice John G. Roberts, Jr., and Justices Anthony M. Kennedy, Antonin Scalia, Sonia Sotomayor, and Clarence Thomas.

Upcoming Oral Arguments

3/31Kimble v. Marvel Enterprises, Inc. Whether the Court should overrule Brulotte v. Thys Co., which held that “a patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se”.

4/20Johnson v. United States Whether possession of a short-barreled shotgun is a violent felony, leading to a longer prison term as a career criminal.

4/21McFadden v. United States A federal prosecutor’s duty to prove that a suspect knew that a substance was an illegal substitute for a banned drug.

4/22Horne v. Department of Agriculture The federal government’s duty to pay raisin growers for an order requiring removal of part of a year’s crop from the market to stabilize prices.

On Monday afternoon Justices Anthony Kennedy and Stephen Breyer testified before the House Appropriations Committee. The purpose of the hearing was to discuss the Court’s budget for the next fiscal year and the federal judiciary, but the legislators also took full advantage of the occasion to touch on other topics as well.